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unless, perhaps, as to third persons, who have acquired intervening rights to be affected by the alteration.1

$278. It has also been held, that a signature to the patent, and a certificate of copies by a person calling himself "acting commissioner," is sufficient on its face in controversies between the patentee and third persons, as the law recognizes an acting commissioner.2

REISSUE OR AMENDMENT OF A PATENT.

§ 279. The act of July 4, 1836, § 13, makes the following provision in case of a defective or insufficient specification, or of the subsequent invention of something which the patentee wishes to add to his specification.

§ 280. "And be it further enacted: That whenever any patent which has heretofore been granted, or which shall hereafter be granted, shall be inoperative or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had or shall have a right to claim as new; if the error has or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful for the commissioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention, for the residue of the period then unexpired for which the original patent was granted, in accordance with the patentee's corrected description and specification. And in case of his death, or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assignees. And the patent so reissued, together with the corrected description and specification, shall have the same effect and operation in law, on the trial of all actions hereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected

1 Woodworth v. Hall, 1 Woodb. & M. 248; s. c. Ibid. 389.

2 Woodworth v. Hall, 1 Woodb. & M. 248. Where evidence is offered to prove that the "acting commissioner" who signs a patent was not appointed by the President, it is doubtful whether it is competent in controversies where he is not a party. s. c. 1 Woodb. & M. 389.

form, before the issuing out of the original patent. [And whenever the original patentee shall be desirous of adding the description and specification of any new improvement of the original invention or discovery which shall have been invented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars, as herein before provided, have the same annexed to the original description and specification; and the commissioner shall certify, on the margin of such annexed description and specification, the time of its being annexed and recorded; and the same shall thereafter have the same effect in law, to all intents and purposes, as though it had been embraced in the original description and specification." 1]

That provision of the section in brackets has been abolished by the act of 1861, ch. 88, § 9, which provides" that so much of the thirteenth section of the act of Congress, approvedJuly 4, 183 6, as authorizes the annexing to letters-patent of the description and specification of additional improvements is hereby repealed. And in all cases where additional improvements would now be admissible, independent patents must be applied for."

§ 281. The object of conferring this power of surrender and reissue is to enable patentees to remedy accidental mistakes. In a very recent case the court took the opportunity of pointedly condemning a practice which had sprung up of late, and which consists in surrendering valid patents and obtaining reissues for the purpose of inserting therein expanded and equivocal claims.2

1 The act of March 3, 1837, § 8, makes a further provision on this subject: "And be it further enacted, That, [whenever application shall be made to the commissioner for any addition of a newly discovered improvement to be made to an existing patent, or] whenever a patent shall be returned for correction and reissue, the specification of claim annexed to every such patent shall be subject to revision and restriction, in the same manner as are original applications for patents; the commissioner shall not [add any such improvement to the patent in the one case, nor] grant the reissue in the other case, until the applicant shall have entered a disclaimer, or altered his specification of claim in accordance with the decision of the commissioner; and in all such cases the applicant, if dissatisfied with such decision, shall have the same remedy and be entitled to the benefit of the same privileges and proceedings as are provided by law in the case of original applications for patents." The parts in brackets are repealed by act of 1861, ch. 88, § 9.

Burr v. Duryee, 1 Wallace, 531. "Since the date of this act, not only the Patent Office but the bar can furnish gentlemen fully competent to the task of

Inasmuch as it is the duty of the Commissioner of Patents to see that a reissue does not cover more than the original, the reissue is to be presumed to be for the same invention until the contrary be shown. Variations in the two patents do not necessarily imply that the subsequent one is for a different discovery. The right to surrender the old patent and receive another in its place was given for the purpose of enabling the patentee to give a more perfect description of his invention, when any mistake or oversight was committed in the first. If a separate invention is covered by one of the claims in a surrendered patent, and that claim, as there made, is void, the patentee may take a distinct patent therefor.1

Whether the defect be in the specification or the claim, the patentee may surrender his patent, and, by an amended specification, cure the defect. A substantially new and different invention cannot be claimed; but where the specification or claim is made so vaguely as to be inoperative or invalid, yet an amendment may give to it validity. The patentee has a right to restrict or enlarge his claim so as to give it validity and effectuate his invention.2 drawing up proper specifications, and but little liable to commit blunders from inadvertency. Specifications now seldom issue from the Patent Office to which such an imputation can be made. Nevertheless, this privilege of surrender and reissue is resorted to more frequently than ever. Formerly, when in course of investigation in a court of justice it was discovered that a patent was invalid, for any of the reasons mentioned in the act, it was resorted to. Now, after a patent has been declared to be valid, the specification without defect, and the claim for nothing more than the invention, after it has undergone examination for many years, and courts and juries have decided that the patent is not invalid through inadvertency, accident, or mistake, the assignees come forward and make oath that the inventor's original patent is unavailable' for some purpose unnecessary to be divulged. In the present case, the purpose is transparent. The specification of this reissued patent, instead of describing first the machine and the several devices which exhibit its peculiar mode of operation in order to produce the desired effect, and stating what the patentee claims as his peculiar invention, commences by describing a mode of operation' as the thing intended to be patented, and uses these words: The said mode of operation invented by the said Henry A. Wells, is embodied in the following description of the mode of application. The claim is for the mode of operation substantially as herein described.

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"We have no leisure for a further development of this novel form of patent, or how, by the use of general and abstract terms, the specification is made so elastic that it may be construed to claim only the machine, or so expanded as to include all previous or future inventions for the same purpose."

1 O'Reilly v. Morse, 15 How. 62.

* Battin v. Taggert, 17 How. 74. Reversing the same case in 2 Wallace, C. C. R. 101.

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A patent which is extended by a special act of Congress becomes thereby a patent for the period of twenty-eight years from its original date, and a surrender and reissue thereof after such extension stand on the same footing as if they had been made in the case of a patent for twenty-one years.1

§ 282. The question has been raised, how far the decision of the Commissioner of Patents upon the existence of a defect in the specification, arising from inadvertence, accident, or mistake, is reexaminable elsewhere. It becomes important when, in an action under the reissued patent, the defence is set up that the reissue is for a different invention for that described in the surrendered patent. Inasmuch as the descriptions in the two patents necessarily differ, it follows that if the commissioner's decision is open to reexamination, so that the fact of the existence of defects in the former patent can be inquired into, the defendant is at liberty to show that the reissued patent is not for the same invention as that covered by the surrendered one. But if, on the other hand, the commissioner's action in the matter of surrender and reissue is conclusive, then the granting of a new patent, as provided by statute, precludes all inquiry into the fact whether it was or was not rightly granted, and makes the new patent of necessity applicable to the same invention as the old.

Under the act of 1832 the Supreme Court held that the reissue of a patent by the commissioner was primâ facie evidence that the proofs of defect required by the statute had been regularly furnished and were satisfactory.2 Subsequently, under the act of 1836, the same court appears to have considered the granting of the renewed patent as so far conclusive upon the question of the existence of error in the original patent arising from inadvertency, accident, or mistake, that nothing remained open but the fairness of the transaction; that the question of fraud might be raised, and that this was for the jury; but that, unless the surrender and renewal were impeached by showing fraud, the reissue must be deemed conclusive proof that the case provided for by the statute existed.3

This view is also taken in Woodworth v. Stone, Allen v. Blunt,

1 Gibson v. Harris, 1 Blatch. 167. (1846.)

The Philadelphia and Trenton R. R. Co. v. Stimpson, 14 Pet. 448.

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Stimpson v. Westchester R. R. Co. 4 How. 380.

incidentally affirmed in O'Reilly v. Morse, and expressly affirmed in Potter v. Holland.1

1 Woodworth v. Stone, 3 Story's R. 749, 753. In this case, which was in equity, the learned judge said: "But the most material objection taken is, that the new patent is not for the same invention as that which has been surrendered. And certainly, if this be correct, there is a fatal objection to the prolongation of the injunction. But is the objection well founded, in point of fact? It is said, that the present patent is for a combination only, and that the old patent was for a combination and something more, or different. But I apprehend that, upon the face of the present patent, the question is scarcely open for the consideration of the court; and, at all events, certainly not open in this stage of the cause. I have already, in another cause, had occasion to decide, that where the Commissioner of Patents accepts a surrender of an old patent and grants a new one, under the act of 1836, ch. 357, his decision, being an act expressly confided to him by law, and dependent upon his judgment, is not re-examinable elsewhere; and that the court must take it to be a lawful exercise of his authority, unless it is apparent, upon the very face of the patent, that he has exceeded his authority, and there is a clear repugnancy between the old and the new patent, or the new one has been obtained by collusion between the commissioner and the patentee. Now, upon the face of it, the new patent, in the present case, purports to be for the same invention and none other, that is contained in the old patent. The avowed difference between the new and the old is, that the specification in the old is defective, and that the defect is intended to be remedied in the new patent. It is upon this very ground that the old patent was surrendered and the new patent was granted. The claim in the new patent is not of any new invention, but of the old invention more perfectly described and ascertained. It is manifest that, in the first instance, the commissioner was the proper judge whether the invention was the same or not, and whether there was any deficit in the specification or not, by inadvertence, accident, or mistake; and consequently, he must have decided that the combination of machinery claimed in the old patent was, in substance, the same combination and invention claimed and described in the new. My impression is, that at the former trial of the old patent before me, I held the claim substantially (although obscurely worded) to be a claim for the invention of a particular combination of machinery, for planing, tongueing, and grooving, and dressing boards, &c.; or, in other words, that it was the claim of an invention of a planing-machine or planing apparatus such as he had described in his specification.

"It appears to me, therefore, that primâ facie, and at all events in this stage of the cause, it must be taken to be true, that the new patent is for the same invention as the old patent; and that the only difference is, not in the invention itself, but in the specification of it. In the old, it was defectively described and claimed. In the new, the defects are intended to be remedied. Whether they are effectually remedied is a point not now properly before the court. But as the commissioner of patents has granted the new patent as for the same invention as the old, it does not appear to me that this court is now at liberty to reverse his judgment, or to say that he has been guilty of an excess of authority, at least (as has been already suggested) not in this stage of the cause; for that would be for the court

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